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23 September 2009

Joint Ownership and Copyright Licences

Acquiring a license to use a copyrighted work is often difficult. For one thing, it is often not easy to determine who owns the copyright in the work. The enterprise of acquiring a license becomes even more difficult when the copyright in the work concerned is owned by more than one person. If not anything else, to acquire a license to the work in such a case, it would, in India, be necessary to acquire licenses from all the owners of the copyright concerned.

In the case of Angath Arts Private Limited v. Century Communications Ltd. and Anr.,1 the High Court of Bombay held that the ‘Joint owner of a copyright cannot, without the consent of the other joint owner, grant a licence or interest in the copyright to a third party.’

To reach this conclusion, the High Court referred to the 1994 case of Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd., in which the Supreme Court observed that: ‘It is a settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor. It cannot have two origins. Where, therefore, the first defendant-respondent has proclaimed himself as a rival of the plaintiffs and as joint owner it is impermissible in law. Even then, the joint proprietors must use the trade mark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other.’ The Court also refused to accept a submission that while it is possible to restrict the joint use of a trade mark because it is tangible, it is not possible to do so in the case of a copyright since copyright is intangible.

In addition to this, the High Court of Bombay relied on a decision of the Allahabad High Court rendered in Nav Sahitya Prakash v. Anand Kumar,2 which itself followed the decision of the Chancery Division in Powell v. Head reported in 1879 12 Ch.D 686, where the Allahabad High Court held that a joint owner of a copyright cannot, without the consent of the other joint owner, grant a licence or interest in the copyright.

Under Indian law, joint owners of a copyright cannot exploit the copyright singly or individually; they can only do so jointly. No joint owner can assign, transfer, license or sub-license or in any other manner use the copyright without the concurrence of the other joint owners.

This is, however, not the case in all jurisdictions. In some jurisdictions such as the US, although no joint owner of a copyright can grant an exclusive license with respect to its proportional share in any work without the consent of all the other owners of the copyright in that work,3 copyright owners may unilaterally grant nonexclusive licenses.

It has been argued by some experts that this restriction disallowing joint owners of copyright from granting exclusive licenses has been created by courts and was never intended by Congress since the 1976 (US) Act incorporates one of the principles of copyright law: the principle of divisibility.

According to William Patry, the principle of divisibility made its way into the 1976 Act with Congress intending ‘that co-owners be able to grant non-exclusive licenses without the others’ permission and that they be able to transfer their proportional share in the whole without the others’ permission, in which case the transferee would indeed stand in the shoes of the transferor’.4 However, this is not exactly how courts have interpreted the relevant provisions in the statute.

In some circumstances, this has proved to be beneficial. For example, if one were to consider the retroactive licensing of copyrights, the interpretation of the law by the judiciary has meant that the co-owner of the copyright in a work cannot grant a retroactive license in that work unilaterally.5 So, if a third party were to infringe the copyright of a jointly owned work, one of its joint owners would not be able to legitimize that third party’s use of the work by granting a retroactive license to the third party and, thereby, for all practical purposes, preventing the other joint owner(s) from suing that third party for copyright infringement. The joint owner would only be able to release that third party from being liable to himself for past infringements.

The lesson seems to be that when acquiring or, for that matter, granting, licenses for works in which the copyright is owned by more than one person, the license agreement in question must be drafted with reference to the provisions of not just statutory law but also case law. As a general rule, regardless of the jurisdiction, it would appear to be prudent to obtain licenses before using the copyrighted work instead of attempting to obtain a license after using the work, and to obtain a license from all the owners of the work in question.

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